Presentation transcript

•Please note that no legal advice is beingoffered and no attorney-clientrelationships will arise during thispresentation.

IP Rights are Provided for in theConstitution

•Article I, Section 8: “TheCongress shall have power to…promote the progress ofscience and useful arts, bysecuring for limited times toauthors and inventors theexclusive right to theirrespective writings anddiscoveries”

Policy Behind IP Rights

•IP Law seeks to promotecreativity

•The property rights grantedprotect the creators’opportunities to recoup theirinvestment and earn a profit,and encourages them toinvest their time and effortsin developing new productsand services

Four Types of

Intellectual Property

•patents

•

copyrights

•trademarks

•trade secrets

Four Types of

Intellectual Property con’t.

•

Patents

cover compounds, machines, and processes

•Give the right to exclude others from making, using,offering for sale, selling, importing (they do notnecessarily allow you to practice your own patent!)

•Copyrights

cover works of authorship reduced to a tangiblemeans of expression

•Give exclusive rights to copy, distribute, perform,display, make derivative works

Four Types of

Intellectual Property con’t.

•Trademarks

indicate source of goods and services

•prevent others from “passing off”

•Trade Secrets

are legally protected secrets

•

misappropriation is unlawful, but reverse engineeringis fair game

•Utility (useful): proposed or demonstrated use

•Novelty: not previously described in a publication

•Non-obvious: not suggested by combinations ofpublications

•Enablement: one of “ordinary skill” in that fieldcan carry it out (lack of data)

•Written Description: you can only claim as muchas you actually invented (lack of data)

•Best Mode: at the time of filing

Patent requirements

An invention is not patentable unless it isuseful, novel, and non-obvious

What is Patentable?

What is Patentable?

“Anything under the sun made by man”

•New chemical compounds, e.g., drugs, pesticides

•Methods of producing new compounds

•Methods of diagnosing or treating diseases, including

biomarkers, delivery systems, and vaccines (no genetherapy in humans)

•New uses for old compounds

•Purified natural materials, e.g., DNA, enzymes

•New formulations or mixtures, e.g., alloys, shampoo

•Transgenic animals or plants (excluding humans)

•Devices (stents, machines, orthopedic devices, prosthetics,

etc., and novel and non-obvious modifications thereof)

•Methods of performing a function by computer software

•Methods of doing business

•Methods of processing digital signals

WHAT ISNOT

PATENTABLE?

•Patent law provides for what is patentableand for what is not patentable.

•An invention is not patentable if it falls intoone of the following categories:

•a mere change in size, form, or shape;literary, dramatic, musical, and artisticworks (these are subject to copyrightlaws); data structures or programs perse; mere mathematical algorithms;nonfunctional descriptive material;electromagnetic signals; human beings;an invention that is inoperative; aninvention which can only be used forillegal or immoral purposes (such as atorture device); and an invention solelyuseful in making atomic weapons.

WHAT IS NOT PATENTABLE? (con’t.)

•Merediscoveries

are not patentable

•A discovery can be thought of assomething which adds to humanknowledge, but does so by observation.Discoveries include such things asidentification of a new species of plant, anew biochemical pathway, naturallyoccurring substances, or laws of nature.

•Once a discovery is made a modificationor new use of the discovery might bepatentable.

Correlation Between Patentabilityand Commercial Value of an Invention

•NONE! (not quite true, but it makes mypoint)

•A patentable invention may have little orno commercial value

•An invention with a lot of commercialvalue my have little chance of beingpatented

•Dilemma-

Without the potential foradequate patent protection, mostcompanies will not invest in a technology

Invention

Disclosure

Triage

Patent

Protection

???

Copyright 2003

UVA Patent Foundation

All Rights Reserved

Evaluation of New Invention Disclosures

To File or Not to File?

General Triage Factors to Consider:

1. Preliminary Assessment of Patentability(with an eye toward written description andenablement issues due to too little dataand on novelty and obviousness issuesexposed in a prior art search)

2. Pre-market Analysis

3. Commercial Potential

From invention to patent

•Bad things-

Public disclosure before filing-

results in lack of novelty (kills foreign rights;starts one year clock for filing in the U.S.); alsopossible obviousness issues

•Presentations

•Publications (remember abstracts, web)

•Grant applications (once awarded-

if federal)

•In use

•Good things-

Inventors are diligent in filinginvention disclosures

•Lab notebooks (identify inventors and dates)

Good Invention Disclosure-

for a cheaper and better result

•Invention has been fully completed andmany examples are in the inventiondisclosure; make it easy for the licensingassociate and attorney to review it and tobe able to cut and paste necessaryportions of the disclosure in an efficientmanner

Good Invention Disclosure-

for a cheaper and better result

•Well organized-

such as draft manuscript;a grant proposal, but only if there are alot of preliminary data; (keep totaldocuments to a minimum if possible)

•Editable (Word, etc.)

•Keep cited references to a minimum

Bad Invention Disclosure-

results in a more expensive and lessdesirable result

•Unorganized

•Incomplete-

missing sections such as materialsand methods; incomplete description of results orfigures; figures with no accompanying legend orwhich are not described in the text of thedisclosure

•Royalties on successful products can behuge! (even more than a graduate student’sstipend)

Ownership of IPat UVA

•Patents

•UVA owns inventions by contract

•Bayh-Dole Act (allows universities toown federally funded research)

•Co-ownership with other entities

•MTAs, sponsored research agreements,consulting can modify ownership

The UVA PatentFoundation-(technology transfer)

•Protection and licensing of UVA’sinventions

•Bayh Dole government reporting

•Advice on intellectual property for UVA(primarily for patents; some fortrademarks and copyrights)

UVA and the UVA PatentFoundation Honor Inventors

2010 UVA Inventors of the Year

Tim Macdonald and Kevin Lynch

Some Familiar UVA Inventors

PATENT MYTHS

Myth #1: An inventor needs to know howan invention works

•The inventor does not need to understandhow or why their invention works.

•If an inventor discovers a new method ofcuring cancer, it does not matter how themethod works, just that it works.

PATENT MYTHS

Myth #2: An inventor needs a prototype

•If the invention is such a simple device thatdrawings and a description will allow one ofordinary skill in the art to make or practicethe invention, that is all that is needed. Infact, if the invention is simple enough,actual reduction to practice may not benecessary (forget about this forbiotechnology).

FH2NOOH2NOOPATENT MYTHS

Myth #3: An idea is patentable

•Although an idea is not patentable, if that ideahas been formulated in such detail that it can beso clearly described in the specification that oneof ordinary skill in the art could make or practicethe invention based on the details provided inthe specification, then it might be possible to geta patent on the idea.

•Few

technologies other than simple machinesor simple processes fall into this category.

PATENT MYTHS

Myth #3: An idea is patentable (cont.)

For most technologies, such asbiotechnology, the standards of writtendescription and enablement are so high it isdifficult to get a patent even when there issubstantial data and actual reduction topractice!

PATENT MYTHS

Myth #4: The preferred or best way ofpracticing an invention can be kept secret byexclusion from a patent application

Patent law requires that the “best mode” ofpracticing the invention be included in theapplication, if a best mode is known. Failureto comply can result in invalidation of apatent. If secrets are to be kept, then theymust be protected as a trade secret and arenot allowed in patent law.